Before you can formulate and implement an effective brand protection and anti-counterfeiting strategy, you must first identify your intellectual property assets and, whenever possible, register those assets with the appropriate government authorities.
An IP audit is the process of identifying your current and possible future intellectual property assets (trademarks, copyrights, patents, trade secrets, and domain names) and ranking them in terms of importance, value, and potential threats. Your company’s most important IP assets will help you create a budget for brand protection services and guide the evaluation and choice of anti-counterfeiting tools and technologies.
Trademarks: A trademark is most often a word, phrase, or symbol (but it can also be a sound, scent, or color) that identifies the source or origin of a particular good or service sold in commerce.
The name of your business, your company logo, your product names and even the appearance of your products may all serve as trademarks that distinguish your business from your competitors. “COCA-COLA,” for example, is a standard “word mark.” The Nike “swoosh” is a “design mark” and the word mark “eBay” is an example of a “stylized” word mark having a distinctive font and design.
You can also trademark distinctive pattern styles such as the iconic, recognized “Burberry plaid.” The packaging for your products can also be trademarked. This is referred to as “trade dress,” – the Tiffany’s blue box being one of the most well-known.
All of these examples serve to identify the original source or creator of the products that bear the trademark. To inventory all of your trademarks, write down all of your business names, product names, logos, and original designs, distinctive packaging, etc. Each of these may be protectable assets of your business.
Copyrights: A copyright protects any original work of authorship that is created and made into a fixed tangible medium of expression such as a song, a book, a painting, a dance routine, a jewelry design or movie. Often copyrights are described as a “bundle” of rights which include the right to reproduce or “copy” the work, the right to publish the work, the right to adapt or create derivative works, the right to perform the work and the right to display the work. It is possible to both trademark and copyright something, your company logo for example. When your logo appears on your products, it is protectable as a trademark. However, since its an original creative work of art, you can also file for copyright protection. Think about all of the artistic items you have created for your business; they may well be copyrightable.
Patents: A patent is an exclusive right, granted to an inventor, to manufacture, use or sell an invention for a specified number of years. Types of patents include utility patents, design patents, and plant patents. Common examples of patented items include perfumes, games, jewelry, computer software or hardware, machines, and even sporting goods. What’s not patentable is merely the “idea” for something. To have a patent, you have to get your idea down on paper and prove that it can be built or used.
Domain Names: A domain name is the primary navigational tool for the internet. You can use domains to drive interested consumers to your website featuring your products and services. As a result, having several domain names is key to establishing your online presence, boosting your visibility among search engines, and protecting your valuable brand. While not explicitly an IP right, practically speaking, domain names are often considered, and approached, like intellectual property.
The right to use a domain name is a contractual right created by a series of contracts between the domain registrant or user, the registrar (the domain name “seller”), the registry of the top-level domain (the manager for the database for the top-level domain) and the Internet Corporation of Assigned Names and Numbers (ICANN), a non-profit organization entrusted with the security, stability, and interoperability of the domain name system (DNS). A domain name is more analogous to getting a phone number from your mobile phone carrier than it is to a statutorily granted IP asset, but it is no less valuable.
Registration of IP assets is a critical step in preventing infringement because it gives you the ability to enforce your IP, prosecute infringers, and recover damages in courts of law. Sometimes your manufacturers, distributors, or other business partners (particularly those operating in foreign countries) may offer to register your IP assets for you because they claim to know the process and that it will be faster or cheaper to allow them to handle the registrations. It is important that you do NOT let third parties register your IP assets in their name on your behalf. If your IP assets are registered under another party’s name, they will effectively have the IP ownership rights under law, and not you, and this can negatively affect your ability to enforce your rights in your IP, globally.
In some countries – the United States, for example – you can acquire legal rights in a trademark simply by using the mark in connection with your goods. You can even sue a party for infringement without ever registering your mark. In other countries however, using the mark is not enough. In China, e.g., you must register your mark with the China Trademark Office (CTMO) to ensure that your rights are protected (unless your unregistered mark is recognized as a “well-known mark by trademark authorities, which only applies to very famous brands). In these “first to file” jurisdictions, another party, including a counterfeiter, can pre-empt your use of a mark in that country if they file an application before you, even if you have been using the mark for years.
Even where registration is not a legal requirement, it typically offers several benefits that are not otherwise available to a trademark owner without registration so, as a practical matter, registering your trademarks should be considered a top priority in every jurisdiction where you’re doing business.
In the United States, these advantages include:
Similar advantages are granted if registrations are filed in Europe with the EU Intellectual Property office (EUIPO) or in Asia.
You can register your trademarks:
1) Directly with the relevant IP offices in individual countries
2) Using the World Intellectual Property Organization (WIPO), Madrid System, which allows you to file a single application and pay one set of fees to apply for protection in up to 124 countries.
Geographic Limitations: Trademark rights are geographically limited. Having trademark rights in the United States, e.g., provides you no protection in China, and vice versa. So, you need to ensure that you’ve taken steps to protect your rights in every country in which you’re doing business (or in which you may seek to expand your business).
Product Category Limitation: The scope of protection of a trademark is only applicable to the specific international class of goods and services that you designate and pay for in your trademark application. There are 45 classes of trademarks from Chemicals (Class 1) to Legal Services (Class 45). Depending upon the kind of product or services you are selling, you may register your mark in multiple classes. In China, there are even “subclasses.” Two identical registered trademarks may exist at the same time if each one is assigned to different classes of goods/services and provided that there is no likelihood of confusion. It’s important that you file your trademark in the proper classes to ensure adequate protection.
First to Use vs. First to File: The third point you must keep in mind is how you go about acquiring trademark rights in different countries. In some countries – the United States, for example – you can acquire legal rights in a trademark simply by using the mark in connection with your goods (though there are added benefits to registering as explained below); in others however, using the mark is not enough. In China, e.g., you must register your mark with the China Trademark Office (CTMO) to ensure that your rights are protected, unless your unregistered mark is recognized as a “well-known mark” by trademark authorities. In such “first to file” countries, another party, including a counterfeiter, can pre-empt your use of a mark in that country if they file an application before you, even if you have been using the mark for years.
You are not required to register a work to claim copyright protections. In fact, your ownership vests the moment your copyright protectable work is fixed in a tangible medium. Some jurisdictions, however, may require registration in order to avail yourself of the full range of rights provided under that country’s laws. By way of example, under U.S. law, a copyright owner may not pursue civil litigation in connection with a claimed infringement without first obtaining a certificate of registration from the Copyright Office. Registration also serves as prima facie evidence of the validity of the copyright, serves as constructive notice to potential infringers, and allows the copyright owner to seek statutory damages for infringement (i.e., the copyright owner will not be required to prove the actual monetary damages suffered as a result of another party’s unauthorized reproduction or other covered use of the work).
In the United States, the Copyright Act of 1976 (as amended) establishes the basis of all copyright law and vests authority for issuing copyright registrations in the Copyright Office, part of the Library of Congress. In Europe, EUIPO manages copyright registrations. There is no centralized copyright office in Asia but the World Intellectual Property Organization (WIPO) has a division for helping copyright owners with registrations in Asia.
Global Reach: While every country has its own copyright laws, global treaties related to copyright law provide some consistency. Unlike trademarks, which are geographically specific, the BERNE Convention means that the copyrights you establish in one country are recognized by every other signatory, meaning every other country in the world (except for seven who do not participate in the BERNE Convention). This is very useful for things like online enforcement but remember, as discussed above, there are many reasons to register to maximize your protection.
Copyrighted Images vs. Copyrighted Products: You can register copyright protection for an image of your product but also the product itself. The difference will be important when it comes to enforcing your rights. For example, if you find that a website is showing an image of your product lifted from your own website (what is frequently referred to as “piracy”), you have a copyright interest in that image and can file a DMCA takedown notice with website owner (See Enforcement, Section d. below). However, if your product has a unique creative design element and a counterfeiter has manufactured a product that resembles the same design, you may be able to sue the counterfeiter directly for copyright infringement of your product in a court of law.
Copyright Term: Unlike trademarks that can be registered indefinitely so long as you are using the trademark in commerce, copyright protection expires. The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication. As a general rule, for works created after January 1, 1978, in the United States, copyright protection lasts for the life of the author plus an additional 70 years. After that period, the copyrighted work is considered in the “public domain”
A patent is an exclusive right, granted to an inventor, to manufacture, use or sell an invention for a specified number of years. Types of patents include utility patents, design patents, plant patents, and provisional patents. In the United States, applicants for a patent may do so online through the USPTO website. In Europe, once again, EUIPO is the designated office for patent filings and in Asia, each country has its own patent office for registrations. If you’ll be seeking patent protection in multiple jurisdictions, you may be able to save yourself time and money by filing an application pursuant to the Patent Cooperation Treaty.
As patent applications can often be complex and require you to provide and “claim” many technical details about the invention. You should consider engaging the services of a patent professional such as a patent lawyer or patent agent to assist you with preparing the application and responding to office actions issued by the Patent Examiner.
SMEs may not always be in a position to produce or market their invented product with their own resources. Patents, being a form of commercial property, provide a basis for you to:
Patent protection can be obtained through filing an application with the USPTO in the United States. In Europe, patent applications are reviewed, and registrations issued, by the EUIPO.
Patent Criteria: Patent applications must satisfy the following three criteria:
Registering a domain name is how you acquire the asset itself. Unlike, other types of intellectual property, names are created by a commercial contract rather than by filing a registration with any national patent, trademark, or copyright office.
Generic top-level domain names, such as .COM, .ORG, and .SHOP can be registered with one of several ICANN accredited registrars located around the world. Country code top level domain names such as .FR (France), .DE (Germany), or .CN (China), must be registered with the authorized registry operator for that country.
Domain Portfolios: Although you need at least one domain name to create your internet presence, you may wish to consider registering multiple domain names to create a portfolio of names for future use as well as prevent others from registering variations of your domain name. For example, if you own a sporting goods store, you may wish to register STORENAME.COM, but also STORENAME.SPORTS, and/or STORENAME.GAMES.
Registering your IP assets is a critical step to preventing counterfeiting activities because, as you will read later in this toolkit, these registered assets are needed in order to file legal complaints against known counterfeiters.
However, there is a second important step you need to do to prevent counterfeiters from stealing or infringing your products. It’s critically important also to take measures to secure the supply chain for your products – particularly if your products are manufactured by a third party (i.e., “outsourced”) – whether they’re being distributed online or through traditional “brick and mortar” retailers. Here are a few fundamentals:
If you’re using a third-party manufacturer, make sure you have a proper agreement in place that mitigates the risk of potential counterfeit related activities. For example, your contracts should have explicit provisions for destroying defective goods found during production to prevent those products from entering the supply chain. Additionally, your contracts should include language that limits the manufacturers’ ability to order raw materials without specific authorization and also prevent the manufacturing facilities from producing “over-runs.” Finally, you should inspect their storage and holding facilities to make sure finished products are secured on site to prevent theft.
If you license your trademarks or other IP to third party sellers, resellers, wholesalers, or distributors; do your due diligence on each of your licensees to make sure that they operate in strict compliance with your terms and conditions for the sale and distribution of your products. Inspect their facilities periodically, and don’t hesitate to enforce or renegotiate your licensing arrangements when infringements become evident.
Budget allowing, incorporate anti-counterfeiting technology into your product or packaging. This provides overall security for your products and also allows you and your distributors to easily confirm genuine or fake items. A product security firm can help you determine the appropriate security and/or anti-counterfeiting measure. There are several security methods available including:
Tips on Searching for Security and/or Anti-Counterfeiting Technology
Unlike trademarks, copyrights, and patents, domain names are vulnerable to hijack and theft of their registration if they are not properly secured. There are several ways you can increase the security around domain names to prevent unauthorized access, theft or misdirection including:
Although not available for trademarks, patents, or copyrights, one additional effective infringement protection tool available for domain names is registration “blocking.” Domain blocking services allow you to block, proactively, domain name registrations that contain your trademarks. Blocking allows brand owners a way to opt out of the traditional domain registration, but still protect their trademarks from being registered and misused by cyber-squatters. Blocking services, also sometimes referred to as “domain protected marks lists” are not available for all domain names at every top-level, but large registry operators such as Donuts, MMX, and Radix, all offer blocking for their top-level domain names.
Another effective way to prevent infringement is to make the protection of IP rights an important part of both your own company’s culture and the culture of those with whom you do business. You should designate a person in your organization responsible for managing brand protection and anti-counterfeiting activities. Implement policies, contract provisions, and training to educate employees, vendors, partners, and contractors stressing the importance of brand protection. Inform them how to be vigilant and report infringements. Get their commitment to respect the intellectual property rights of your company.
To further assist in counterfeit prevention and also detection, ensure that the personnel responsible for protecting your company’s intellectual property assets and those responsible for managing its retail operations, communicate and coordinate their efforts to protect your intellectual property assets. Retail personnel can also inform brand protection teams about which products are the most popular with the customers. The more popular the product, the more attractive to counterfeiters.
Finally, it’s important for you to keep safe, all of the issued certificates of registrations you receive for the trademarks, patents, and copyrights that are registered. These will be important pieces of proof often required by law enforcement and ecommerce platforms to prove you are the IP owner.
In addition, please include provisions in your agreements with manufacturers, vendors, suppliers, and sellers that address the protection and use of your intellectual property. Your agreement may include clauses that describe where trademark and copyright designations are displayed on the products or in the stores. The agreements should also include clauses that clearly state your rights in your IP and request your contracting partners not to engage in any activities that compromise those rights and their commitment to protect your IP.
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